Trademark Protection of Color: Louboutin's Red-Soled Shoe Is a Clever Logo

A deeper look at the question of trademark and the use of color in product design.

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trademark protection of color louboutins red soled shoe is a clever logo

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Updated on: February 28, 2023
Read time: 4 min

Christian Louboutin has been using red-lacquered shoe bottoms on his high fashion pumps since 1992. Apparently, he got the idea when he painted the bottom of a black shoe with red nail polish, and in 2008, Louboutin applied for trademark registration for the red shoe bottom (“Red Sole Mark”).

In 2011, Louboutin filed a lawsuit against Yves Saint Laurent (YSL), seeking to enjoin the high fashion competitor from selling its monochrome red shoe, which also has a red sole. The District Court of New York refused to enjoin YSL, holding that color alone could never be protected as a trademark.

The Second Circuit reversed, holding that the color red, when used on the bottom of a shoe with a contrasting upper shoe color, had acquired “secondary meaning” in consumers' eyes. Though the case was considered a win for Louboutin, the court did not grant the injunction against YSL because its use of the red sole was in conjunction with a red upper shoe instead of a different color, was not a use of the Red Sole Mark.

According to U.S. Courts, secondary meaning is acquired when “in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself.” Louboutin submitted market studies to the court, which concluded that consumers had come to recognize the red sole as identifying the Louboutin brand.

The market study results were no accident—Louboutin invested millions of dollars marketing its red-soled shoes since they entered the market. The court's holding is certainly fair. If a company invests significant resources into developing a mark that consumers come to recognize, it's only fair that the company should enjoy exclusive use of its own branding.

The law refers to such a mark as acquiring distinctiveness, or if not inherently distinctive (like the Nike swoosh), it is held distinctive if acquires secondary meaning in the mind of consumers.

In London, a court also ruled that color could be subject to trademark protection when the court upheld Cadbury's use of the color purple for its milk chocolate packaging. It held British consumers had come to associate the purple packaging of milk chocolate with the Cadbury brand since it came into use in 1914. In these cases, color alone is not enough, but color used consistently over time, which consumers associate with a brand, may be subject to trademark protection. And no, the law will not uphold a mark that strips competitors of a necessary function of a product, or in terms of design, “a range of alternative designs.”

The functionality defense generally protects the use of color

So why can the red bottom of a shoe qualify for a trademark, but a floral design for a dish set cannot?

Because, according to the Second Circuit's reasoning, a floral design is a necessary aesthetic function to chinaware, and red shoe bottoms are not.

Under U.S. trademark laws, the courts will not recognize a mark that puts competitors at a “significant non-reputation-related disadvantage.” This is known as the “aesthetic functionality” test—when a color trademark will “significantly hinder competition by limiting the range of alternative designs,” it will not qualify for trademark protection.

When the court determines whether a design is functional, it weighs the “source-identifying aspects” of the mark against the “competitive costs of precluding competitors from using the feature.” The court in the Louboutin case did not reach this analysis because it rested its reasoning on the preliminary “distinctive feature” test. Still, the Red Sole Mark would likely tip the scale heavily in favor of a source-identifying aspect, over competitive costs to competitors, especially in light of the market study results submitted by both parties in the litigation.

The same can be said about Cadbury's purple packaging for its milk chocolate. The source-identifying aspect of the packaging far outweighs any competitive cost (if one exists) from other companies packaging their milk chocolate in purple packages.

Louboutin and Cadbury's use of color is akin to logos.

These cases do not create a danger that one company alone will manufacture red shoes, black sneakers, brown chocolate, or other color-based monopolies. Rather, they hold that if your unique use of color (which is not intrinsically functional) has acquired brand recognition in consumers' minds, you get to enjoy exclusive use of the mark.

Courts have long accepted that knock-off products containing illegally manufactured logos infringe upon the true owner's exclusive right to reap the benefits of their own branding. As talented designers have shown us, color alone can be subject to trademark protection if used cleverly.

What would you like to protect?Start my trademark
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This article is for informational purposes. This content is not legal advice, it is the expression of the author and has not been evaluated by LegalZoom for accuracy or changes in the law.

80 days ago
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Jose is the best.

Jose was very friendly and knowledgeable. He was able to answer my questions and provide me information of next steps to secure my trademark.

Cheryl Cooper
83 days ago
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The knowledge the agent possessed was…

The knowledge the agent possessed was super beneficial to rectify the situation I was having with my trademark. Very professional!

Craig Schsrfman
99 days ago
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Trademark work is great and effecient

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Trademark
98 days ago
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Thanks for being so helpful in the…

Thanks for being so helpful in the assist of getting my Trademark filed. -Patrick

Patrick Thompson
105 days ago
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Kevin was able to help me understand…

Kevin was able to help me understand the process needed for filing a trademark. He was clear in his answers and stayed on the phone to help walk through the onboarding.

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123 days ago
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150 days ago
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150 days ago
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I got a very good and focused answer to my trademark questions. Definitely makes me see LZ as the place to go with my legal questions. A+

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154 days ago
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Help with trademark

Got exactly what I needed to register my trademark

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160 days ago
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I had a consultation with an attorney…

I had a consultation with an attorney through LegalZoom concerning the trademark process. and she was very patient and professional. She answered my questions and helped with the ones I had difficulty asking. I appreciated that

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179 days ago
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186 days ago
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221 days ago
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217 days ago
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Register Trademark using LegalZoom

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226 days ago
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TheAlphabetshop
228 days ago
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Legally create your trademark with LegalZoom in 2025 and The Years to Come

The lawyer that assigned to me was not only professional and friendly, but patience beyond measure. All questions answered and additional information given to me as well for future services. This call gave me the reassurance I wanted and needed to continue using LegalZoom for future endeavors, and referring my community/platform to do the same.

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245 days ago
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Trademark Process Made Easy

My LegalZoom Trademark attorney, Asha was extremely professional, friendly and knowledgeable. She answered all my Trademark questions and made this process so easy. I felt like I was in good hands.

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252 days ago
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